Case 2:15-cv-01305 Document 1 Filed 02/24/15 Page 1 of 9 Page ID #:1

1 Bruce B. Brunda (SBN 108,898)

STETINA BRUNDA GARRED & BRUCKER
2
75 Enterprise, Suite 250
3 Aliso Viejo, CA 92656
Email: [email protected]
4 Tel: (949) 855-1246
5 Fax: (949) 855-6371
6 Attorney for Plaintiff
METROTILE MANUFACTURING d/b/a
7 METRO ROOF PRODUCT
8

PHONE: (949) 855-1246; FACSIMIL E: (949) 855-6371

75 ENTERPRISE, SUITE 250

ALISO VIEJO, CALIFORNIA 92656

STETINA BRUNDA GARRED & BRUCKER

9
10

IN THE UNITED STATES DISTRICT COURT

11

FOR THE CENTRAL DISTRICT OF CALIFORNIA

12
13 METROTILE MANUFACTURING, a
California general partnership d/b/a
14 METRO ROOF PRODUCTS,
15
Plaintiff
16

Case No.
COMPLAINT FOR PATENT
INFRINGEMENT OF U.S.
PATENT NOS:
1.
2.

17 vs.
18 METSTAR USA, INC, a Delaware
19 Corporation; METSTAR BUILDING
PRODUCTS, INC., a Canadian corporation,
20 and VINCE GUERRA, Individual, and
21 DOES 1-10, inclusive
22

D526,727; AND
D527,835

DEMAND FOR JURY TRIAL

Defendants

23
24
25

COMPLAINT
Plaintiff, Metrotile Manufacturing d/b/a Metro Roof Products for its Complaint

26 against Metstar USA, Inc, and Vince Guerra, states and alleges as follows:
27
28
Case No.
1
COMPLAINT FOR PATENT INFRINGEMENT OF U.S. PATENT NOS:

Case 2:15-cv-01305 Document 1 Filed 02/24/15 Page 2 of 9 Page ID #:2

PARTIES

1.

Plaintiff,

Metrotile

Manufacturing

d/b/a

Metro

Roof

Products

3 (hereinafter Metrotile or Plaintiff) is a general partnership organized and existing

4 under the laws of the State of California, and having a principal place of business at
5 3093 A Industry Street, Oceanside, California 92054. The partners of Metrotile
6 include Structure Solutions, LLP, a California limited liability partnership, and
7 Probuild Capital Group LLC, a California limited liability corporation.
8

2.

Upon information and belief Defendant Metstar USA, Inc. (hereinafter

PHONE: (949) 855-1246; FACSIMIL E: (949) 855-6371

75 ENTERPRISE, SUITE 250

10 International Drive, Suite 100, Buffalo, New York 14221.

ALISO VIEJO, CALIFORNIA 92656

STETINA BRUNDA GARRED & BRUCKER

9 Metstar USA), is a Delaware corporation having a place of business at 300

11

3.

Upon information and belief Defendant Metstar Building Products, Inc.

12 (hereinafter Metstar Canada), is a Canadian corporation having a place of business

13 at 340 Main Street East, Hamilton, Ontario Canada L8N1J1.
14

4.

Upon information and belief, Defendant Vince Guerra (hereinafter

15 Guerra) is a Canadian citizen, residing in the Province of Ontario Canada.

16

5.

Upon information and belief, Guerra is the primary owner of Metstar

6.

Upon information and belief, Guerra is the principal officer of Metstar

7.

Upon information and belief, Guerra directs and controls the operations

17 USA.
18
19 USA.
20

21 of Metstar USA.
22

8.

Upon information and belief, Guerra is the primary owner of Metstar

23 Canada.
24

9.

Upon information and belief, Guerra is the principal officer of Metstar

25 Canada.
26

10.

Upon information and belief, Guerra directs and controls the operations

27 of Metstar Canada.
28

11.

The true names and capacities of the Defendants named herein as DOES

Case No.
2
COMPLAINT FOR PATENT INFRINGEMENT OF U.S. PATENT NOS:

Case 2:15-cv-01305 Document 1 Filed 02/24/15 Page 3 of 9 Page ID #:3

1 1 through 10, whether individual, corporate, associate, or otherwise, are unknown to

2 Plaintiff, who therefore sues said Defendants by said fictitious names. Plaintiff is
3 informed and believes, and thereon alleges, that each of the Defendants designated
4 herein as DOE is legally responsible for the events and happenings hereinafter
5 alleged and legally caused injury and damages proximately thereby to Plaintiff as
6 herein alleged. Plaintiff will seek leave to amend the Complaint when the true names
7 and capacities of said DOE Defendants have been ascertained. Metstar USA, Metstar
8 Canada, Guerra and DOES 1 through 10 are hereinafter collectively referred to as

PHONE: (949) 855-1246; FACSIMIL E: (949) 855-6371

75 ENTERPRISE, SUITE 250

10
ALISO VIEJO, CALIFORNIA 92656

STETINA BRUNDA GARRED & BRUCKER

9 Defendants or Metstar Group.

11

BACKGROUND OF THE CONTROVERSY

1.

Plaintiff is the owner of United States Design Patent Nos. D526,727 and

12 D527,835 has the right to sue for infringement of United States Letters. Copies of
13 such patents are attached hereto as Exhibits 1-2, respectively.
14

2.

Upon information and belief, Defendants have been making, selling,

15 importing and/or offering for sale the products identified as Davinci FV, and Tile
16 FR.

copy

of

Metstar

Groups

webpage

(www.metstar.com)

17 advertisement/brochure illustrating Defendants products (hereinafter the Accused

18 Products) is attached hereto as Exhibit 3. The Accused Products infringe Plaintiffs
19 Patent Nos. D526,727 and D527,835.
20

3.

Upon information and belief, Metstar Canada promotes, markets,

21 imports, and sells metal roofing products in the United States.

22

4.

Upon information and belief, Metstar USA promotes, markets, imports,

23 and sells metal roofing products, including the Accused Products, in the United
24 States.
25

5.

Upon information and belief, Metstar Canada imports metal roofing

26 products, including the Accused Products, into the United States, through a shipping
27 terminal located in this district, for sale in the United States, including this judicial
28 district.
Case No.
3
COMPLAINT FOR PATENT INFRINGEMENT OF U.S. PATENT NOS:

Case 2:15-cv-01305 Document 1 Filed 02/24/15 Page 4 of 9 Page ID #:4

6.

Upon information and belief, Metstar USA imports metal roofing

2 products, including the Accused Products, into the United States, through a shipping
3 terminal located in this district, for sale in the United States, including this judicial
4 district.
5

7.

Upon information and belief, Defendants Metstar USA and Metstar

6 Canada promote metal roofing products, including the Accused Products at

7 tradeshows, including the International Roofing Expo in New Orleans, currently
8 being held on February 24, 2015 February 26, 2015.
8.

Upon information and belief, Defendants Metstar USA and Metstar

PHONE: (949) 855-1246; FACSIMIL E: (949) 855-6371

75 ENTERPRISE, SUITE 250

10 Canada market, and has offered to sell metal roofing products, including the Accused
ALISO VIEJO, CALIFORNIA 92656

STETINA BRUNDA GARRED & BRUCKER

11 Products, to customers within the state of California and within this judicial District.
12

9.

Upon information and belief Defendant Guerra, in cooperation with

13 Metstar USA andor Metstar Canada, operates the following the domain names
14 www.metstar.com and www.metalbythebundle.com (hereinafter the Websites).
15

10.

Upon information and belief, each of the Defendants participated in and

16 is in some manner responsible for the acts described in this Complaint and the
17 damage resulting therefrom.
18

11.

Upon information and belief, Defendants have acted in concert and

19 participation with each other concerning each of the claims in this Complaint.
20

12.

Upon information and belief, Defendants concerted actions and

21 participation concerning these claims constitutes a conspiracy to unfairly compete

22 with Metrotile and to violate Metrotiles rights as alleged herein.
23

13.

Metrotile is informed and believes, and on that basis alleges, that each of

24 the Defendants were empowered to act as the agent, servant and/or employees of each
25 of the other Defendants, and that all the acts alleged to have been done by each of
26 them were authorized, approved and/or ratified by each of the other Defendants.
27
28

JURISDICTION AND VENUE

14.

This action, as hereinafter more fully appears, arises under the patent

Case No.
4
COMPLAINT FOR PATENT INFRINGEMENT OF U.S. PATENT NOS:

Case 2:15-cv-01305 Document 1 Filed 02/24/15 Page 5 of 9 Page ID #:5

1 laws of the United States of America (35 U.S.C. 1 et seq.), and is for patent
2 infringement. Jurisdiction for all counts is based upon 28 U.S.C. 1331, 1338(a)
3 and (b).
4

15.

Venue is proper under 28 U.S.C. 1391(b) and (c) as Defendants have

5 committed acts of infringement in this judicial district. With respect to Defendants

6 Metstar Canada and Guerra, venue is also proper under 28 U.S.C. 1391(d), as

PHONE: (949) 855-1246; FACSIMIL E: (949) 855-6371

75 ENTERPRISE, SUITE 250

ALISO VIEJO, CALIFORNIA 92656

STETINA BRUNDA GARRED & BRUCKER

7 Defendants Metstar Canada and Guerra are aliens.

8

FIRST CLAIM FOR RELIEF

(Patent Infringement of U.S. Design Patent No. D526,727)

10

16.

Plaintiff realleges and repeats the allegations of paragraphs 1-10 above.

11

17.

Plaintiff is the owner of all right, title and interest in and to United States

12 Design Patent No. D526,727 entitled Metal Roof Tile (hereinafter the 727
13 patent). A true and correct copy of the 727 patent is attached hereto as Exhibit 1.
14 The 727 patent was duly and lawfully issued on August 15, 2006 and is presently
15 valid and in full effect.
16

18.

Upon information and belief, Defendants have been and are

17 infringement the 727 patent within the United States and within this district by
18 importing, distributing, selling, and/or offering for sale products, including products
19 identified as DaVinci FV that infringe the 727 patent.
20

19.

Upon information and belief, Defendants are indirectly infringing the

21 727 patent within the United States and within this by importing, distributing, selling
22 and/or offering for sale in the United States materials and/or apparatus, the use of
23 which infringes the invention set forth in the 727 patent. Upon information and
24 belief, these materials and/or apparatus have no substantial non-infringement use in
25 commerce.
26

20.

Upon information and belief, Defendants are inducing infringement of

27 the 727 patent within the United States and within this district by instructing in the
28 use of materials and/or apparatus that infringe one or more of the claims of the 727
Case No.
5
COMPLAINT FOR PATENT INFRINGEMENT OF U.S. PATENT NOS:

Case 2:15-cv-01305 Document 1 Filed 02/24/15 Page 6 of 9 Page ID #:6

1 patent.
2

21.

Upon information and belief, by the acts of patent infringement herein

3 complained of, the Defendants have made substantial profits to which they are not
4 equitably entitled.
5

22.

By reason of the aforementioned acts of the Defendants, the Plaintiff has

6 suffered great detriment, but which cannot be quantified at this time.

7

23.

Upon information and belief, Defendants continue to infringe Plaintiffs

8 727 patent, and will continue to infringe Plaintiffs 727 patent, and will continue to

PHONE: (949) 855-1246; FACSIMIL E: (949) 855-6371

75 ENTERPRISE, SUITE 250

10 Court.
ALISO VIEJO, CALIFORNIA 92656

STETINA BRUNDA GARRED & BRUCKER

9 infringe Plaintiffs 727 patent to Plaintiffs irreparable harm, unless enjoined by this
11

24.

Any continuing infringement of the 727 patent by Defendants after

12 receiving notice of the 727 patent will be willful, entitling Plaintiff to enhanced
13 damages.
14

SECOND CLAIM FOR RELIEF

15

(Patent Infringement of U.S. Design Patent No. D527,835)

16

25.

Plaintiff realleges and repeats the allegations of paragraphs 1-19 herein.

17

26.

Plaintiff is the exclusive licensee with the right to sue for infringement

18 of United States Patent Design No. D527,835 entitled Metal Roof Tile (hereinafter
19 the 835 patent). A true and correct copy of the 835 patent is attached hereto as
20 Exhibit 2. The 835 patent was duly and lawfully issued on September 5, 2006, and
21 is presently valid and in full effect.
22

27.

Upon information and belief, Defendants have been and are infringing

23 the 835 patent within the United States and

within this district by importing,

24 distributing, selling, and/or offering for sale products, including products identified as
25 Tile FR that infringe the 835 patent.
26

28.

Upon information and belief, Defendants are indirectly infringing the

27 835 patent within this district and elsewhere in the United States by importing,
28 distributing, selling and/or offering for sale in the United States materials and/or
Case No.
6
COMPLAINT FOR PATENT INFRINGEMENT OF U.S. PATENT NOS:

Case 2:15-cv-01305 Document 1 Filed 02/24/15 Page 7 of 9 Page ID #:7

1 apparatus, the use of which infringes the invention set forth in the 835 patent. Upon
2 information and belief, these materials and/or apparatus have no substantial non3 infringing use in commerce.
4

29.

Upon information and belief, Defendants are inducing infringement of

5 the 835 patent within the United States and within this district by instructing in the
6 use of materials and/or apparatus that infringe one or more of the claims of the 835
7 patent.
8

30.

Upon information and belief, by the acts of patent infringement herein

PHONE: (949) 855-1246; FACSIMIL E: (949) 855-6371

75 ENTERPRISE, SUITE 250

10 equitably entitled.
ALISO VIEJO, CALIFORNIA 92656

STETINA BRUNDA GARRED & BRUCKER

9 complained of, the Defendants have made substantial profits to which they are not
11

31.

By reason of the aforementioned acts of the Defendants, the Plaintiff has

12 suffered great detriment, but which cannot be quantified at this time.

13

32.

Upon information and belief, Defendants continue to infringe Plaintiffs

14 835 patent, and will continue to infringe Plaintiffs 835 patent to Plaintiffs
15 irreparable harm, unless enjoined by this Court.
16

33.

Any continuing infringement of the 835 patent by Defendants after

17 receiving notice of the 835 patent will be willful, entitling Plaintiff to enhanced
18 damages.
19

PRAYER FOR RELIEF

20

WHEREFORE, Plaintiff prays for judgment against the Defendants as follows:

21

A.

A judgment that Defendants have infringed, indirectly infringed, and/or

22 induced infringement of the patents in suit.

23

B.

A judgment that Defendants infringement of the patents in suit has been

24 willful.
25

C.

A preliminary and permanent injunction, pursuant to 35 U.S.C. 283,

26 enjoining Defendants, and all persons in active concert or participation with them,
27 from any further acts of direct infringement, indirect infringement or inducement of
28 infringement of the patents in suit.
Case No.
7
COMPLAINT FOR PATENT INFRINGEMENT OF U.S. PATENT NOS:

Case 2:15-cv-01305 Document 1 Filed 02/24/15 Page 8 of 9 Page ID #:8

D.

An order, pursuant to 35 U.S.C. 284, awarding Plaintiff damages

2 adequate to compensate Plaintiff for Defendants infringement of the patents in suit,

3 in an amount to be determined at trial, but in no event less than a reasonable royalty.
4

E.

An order, pursuant to 35 U.S.C. 284, trebling all damages awarded to

5 Plaintiff based on Defendants willful infringement of the patents-in-suit.

6

F.

An order, pursuant to 35 U.S.C. 285, finding that this is an exceptional

7 case and awarding to Plaintiff its reasonable attorneys fees incurred in this action.
8

G.

That Plaintiff have such other and further relief that the court may deem

PHONE: (949) 855-1246; FACSIMIL E: (949) 855-6371

75 ENTERPRISE, SUITE 250

10
ALISO VIEJO, CALIFORNIA 92656

STETINA BRUNDA GARRED & BRUCKER

9 just and proper.

11 Dated: February 24, 2015

STETINA BRUNDA GARRED & BRUCKER

12
13
14
15
16

By: /s/Bruce B. Brunda

Bruce B. Brunda
Attorneys for Plaintiff
METROTILE MANUFACTURING d/b/a
METRO ROOF PRODUCTS

17
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Case No.
8
COMPLAINT FOR PATENT INFRINGEMENT OF U.S. PATENT NOS:

Case 2:15-cv-01305 Document 1 Filed 02/24/15 Page 9 of 9 Page ID #:9

1
2

DEMAND FOR JURY TRIAL

Plaintiff, Metrotile Manufacturing d/b/a Metro Roof Products hereby demands

3 a jury trial in this action.

4
5

Dated: February 24, 2015

STETINA BRUNDA GARRED & BRUCKER

6
7
8

PHONE: (949) 855-1246; FACSIMIL E: (949) 855-6371

75 ENTERPRISE, SUITE 250

10
ALISO VIEJO, CALIFORNIA 92656

STETINA BRUNDA GARRED & BRUCKER

By: /s/Bruce B. Brunda

Bruce B. Brunda
Attorneys for Plaintiff
METROTILE MANUFACTURING d/b/a
METRO ROOF PRODUCTS

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T:\Client Documents\MROOF\026L\complaint-patent infringement.doc

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Case No.
9
COMPLAINT FOR PATENT INFRINGEMENT OF U.S. PATENT NOS:

Case 2:15-cv-01305 Document 1-1 Filed 02/24/15 Page 1 of 6 Page ID #:10

EXHIBIT 1

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Exhibit 1 Page 1 of 5

Case 2:15-cv-01305 Document 1-1 Filed 02/24/15 Page 3 of 6 Page ID #:12

Exhibit 1 Page 2 of 5

Case 2:15-cv-01305 Document 1-1 Filed 02/24/15 Page 4 of 6 Page ID #:13

Exhibit 1 Page 3 of 5

Case 2:15-cv-01305 Document 1-1 Filed 02/24/15 Page 5 of 6 Page ID #:14

Exhibit 1 Page 4 of 5

Case 2:15-cv-01305 Document 1-1 Filed 02/24/15 Page 6 of 6 Page ID #:15

Exhibit 1 Page 5 of 5

Case 2:15-cv-01305 Document 1-2 Filed 02/24/15 Page 1 of 7 Page ID #:16

EXHIBIT 2

Case 2:15-cv-01305 Document 1-2 Filed 02/24/15 Page 2 of 7 Page ID #:17

Exhibit 2 Page 1 of 6

Case 2:15-cv-01305 Document 1-2 Filed 02/24/15 Page 3 of 7 Page ID #:18

Exhibit 2 Page 2 of 6

Case 2:15-cv-01305 Document 1-2 Filed 02/24/15 Page 4 of 7 Page ID #:19

Exhibit 2 Page 3 of 6

Case 2:15-cv-01305 Document 1-2 Filed 02/24/15 Page 5 of 7 Page ID #:20

Exhibit 2 Page 4 of 6

Case 2:15-cv-01305 Document 1-2 Filed 02/24/15 Page 6 of 7 Page ID #:21

Exhibit 2 Page 5 of 6

Case 2:15-cv-01305 Document 1-2 Filed 02/24/15 Page 7 of 7 Page ID #:22

Exhibit 2 Page 6 of 6

Case 2:15-cv-01305 Document 1-3 Filed 02/24/15 Page 1 of 9 Page ID #:23

EXHIBIT 3

Case 2:15-cv-01305 Document 1-3 Filed 02/24/15 Page 2 of 9 Page ID #:24

Exhibit 3 Page 1 of 8

Case 2:15-cv-01305 Document 1-3 Filed 02/24/15 Page 3 of 9 Page ID #:25

Tile FR
Red
Tile FR

System 1
Batten
Strapping

Spec

Exhibit 3 Page 2 of 8

Case 2:15-cv-01305 Document 1-3 Filed 02/24/15 Page 4 of 9 Page ID #:26

Shake
FW

Brown
Shake FW

System 1
Batten
Strapping

OR

System 2
Built-in
Batten

Exhibit 3 Page 3 of 8

Case 2:15-cv-01305 Document 1-3 Filed 02/24/15 Page 5 of 9 Page ID #:27

Slate FD
Sand
Slate FD

System 1

Spec

Batten
Strapping

OR

System 2
Built-in
Batten

Exhibit 3 Page 4 of 8

Case 2:15-cv-01305 Document 1-3 Filed 02/24/15 Page 6 of 9 Page ID #:28

DaVinci FV
Tuscany
DaVinci FV
Spec

System 2
Built-in
Batten

Exhibit 3 Page 5 of 8

Case 2:15-cv-01305 Document 1-3 Filed 02/24/15 Page 7 of 9 Page ID #:29

Tile 2 FZ
Green
Tile 2 FZ

System 1
Batten
Strapping

Spec

Exhibit 3 Page 6 of 8

Case 2:15-cv-01305 Document 1-3 Filed 02/24/15 Page 8 of 9 Page ID #:30

System 1
Batten
Strapping

AND

System 2
Built-in
Batten

System 2
Built-in
Batten

Exhibit 3 Page 7 of 8

Case 2:15-cv-01305 Document 1-3 Filed 02/24/15 Page 9 of 9 Page ID #:31

System 1
Batten
Strapping

Exhibit 3 Page 8 of 8